Revisions made to the Korean Trademark Act (“KTA”) and the Korean Design Protection Act (“KDA”) will go into effect on April 20, 2022. The revised laws introduce, among other things, a reexamination system in order to minimize the establishment of defective rights, and to ease the prosecution and acquisition of trademarks and designs by relaxing the requirement for reviving abandoned applications and registrations.

Salient features of the statutory amendments are highlighted below.

▶Ex Officio Reexamination of Trademarks and Designs

The revised KTA and KDA introduce a reexamination system. Even after a mark or a design has been allowed for registration, if the examiner finds new grounds for rejection, he may issue a Notice of Rejection based on the newly detected grounds. In doing so, the examiner must withdraw the earlier decision of allowance and provide the applicant with an opportunity to respond to the new rejection ground. This reexamination procedure corresponds to the like procedure in the Patent Law implemented on March 1, 2017 and has been introduced for the purpose of preventing the establishment of defective rights and reducing the possibility of invalidation of registered IP rights in advance.

The examiner’s ex officio reexamination, however, may not be made after the payment of the registration fee.

▶Relaxation of Requirement for Reviving Abandoned Trademark/Design Applications and Registrations

Under the current KTA and KDA, applications and trademarks/designs are deemed to be abandoned, withdrawn or extinguished if applicants or registrants fail to act within the time periods set forth in the relevant provisions of the KTA and KDA. If the failure is caused by a reason not attributable to the applicants or the registrants, such as an earthquake or other natural disasters, then the abandoned or extinguished applications or trademarks/designs may be revived upon a request within two (2) months from the date after the reason ceases to exist.

However, the high standard for showing the presence of such non-attributable causes has rendered the revival provisions practically useless. The revision, therefore, lowers the standard of such non-attributable causes to “reasonable causes,” making the revival provisions more invocable. Under the revision, it is expected that the applicant's hospitalization or errors in payment of registration fees made by, e.g., a bank, which were not previously accepted to enable the revival, may be regarded as "reasonable causes."

▶Statutory Presumption of Priority Claim for Divisional Application

When a divisional application is filed without making a priority claim, even though the priority has been claimed in filing the original application, the revision provides a statutory presumption that the priority is also claimed for the divisional application so as to prevent the rejection of such divisional application. Such statutorily presumed priority claim may be 1 withdrawn, in its entirety or part thereof, within 30 days from the filing date of the divisional application.

▶Extension of Time to Appeal Final Rejection from Thirty (30) Days to Three (3) Months

Under the current provisions of the KTA and KDA, applicants are given thirty (30) days from the date of receipt of a final rejection to file an appeal against the final rejection before the IP Tribunal. In response to the criticism that the 30-day window is too short in comparison with other countries, the revision now allows the appeal period of three (3) months.